Lack of
Entitlement breaks glass
vase design
10 The Australian Designs Office
decision in Manuel Canestrini v
Ilan El 1 demonstrates that a failure
to satisfy this requirement can
result in revocation of a design
registration. The decision also
highlights that a request for
revocation will be successful only if
the lack of entitlement challenge is
supported by sufficient evidence.

Background The decision concerned Australian
Design Registrations 201911962
and 201911963 (the ‘962 and ‘963
Registrations). The Registrations
were applied for by Ilan El (the
‘Owner’) in April 2019 and were
subsequently registered in early
July 2019 with the Owner recorded
as the sole designer. A request
for revocation of the Registrations
was made by Manuel Canestrini
(the ‘Requestor’) in late July 2019.

The Owner and the Requestor
had been business partners in a
Manuel Canestrini v Ilan El [2020] ADO 2 (25 June 2020)
1
business known as ‘Formacy’ from
March 2017 until February 2018
when the Owner resigned from the
partnership. Part of the Requestor’s
evidence was the Owner’s
resignation email which noted “As
for the designs that we’ve developed
and the products produced to
date - These are all yours.”
The Owner did not contest or
participate in the proceedings
although the Delegate noted
that the onus remained with the
Requestor to establish, on the
balance of probabilities, that the
Owner was either not entitled or
not solely entitled to the design.

The Decision
The ‘963 Registration related to a
‘Cannon Vase’ design consisting of a
cannonball object within a cannon-
shaped vase seated in a base.

The Requestor’s evidence
demonstrated that he had conceived
and finalised this design in late
Inspire March 2021
The validity of an Australian design
registration requires that the registered
owner is properly entitled to the design rights.




2017 in his capacity as product
designer in the Formacy business.

The evidence included dated email
exchanges demonstrating that the
Requestor had conceived of the
visual appearance and included
alternative and final design versions
circulated by the Requestor to
other partners of the business.

There was no evidence the
Requestor had any contractual
relationship with the other
partners of the business. It was
also noted that conception of the
‘963 design occurred during the
period of the partnership and so
the Owner’s resignation email
disclaiming designs made during
the partnership was relevant.

The Delegate was satisfied
based on the evidence that the
Requestor was the only person
entitled to be the registered owner
of the ‘963 design and the ‘963
Registration was therefore revoked.

The ‘962 Registration related to an
alternative version of the ‘Cannon
Vase’ having a visually different base
and a visually different connection
between the vase and base.

In contrast with the evidence
submitted in respect of the ‘963
design, the Requestor’s evidence
with respect to the ‘962 design
was undated and no supporting
material was provided to indicate
when the design had been
conceived. The Owner’s resignation
email was therefore found not to
disentitle the Owner from the ‘962
design in the absence of evidence
that the design was conceived
during the partnership period.

Crucially, the Requestor’s evidence
of design conception included
images of several different vase
designs but none having the same
visual features as the ‘962 design.

The Delegate conceded that the
vases in the Requestor’s evidence
resembled the ‘962 design but
noted mere visual similarity is, in
isolation, insufficient to establish
entitlement. It was also noted that
a new design may combine visual
features from existing designs and
so even if the Owner had taken
and combined visual features from
the Requestor’s earlier designs,
the Owner may nonetheless be
entitled to the ‘962 design.

On the basis of the evidence
provided, the Delegate was not
satisfied that the Requestor was
a designer of the ‘962 design and
the request to revoke the ‘962
Registration was declined.

Inspire March 2021
11 Duncan Joiner | Senior Associate
BAeroEng (Hons) LLB (Hons), LLM (IP)
duncan.joiner@pof.com.au